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Geographical marks in Italy

The end of the notion of geographical marks as invented names

19 June 2019

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Frequently – and especially in the market for consumer goods – use is made of geographical names in trade marks. Italy's Supreme Court recently returned to the subject, and the law in this area has been shifting recently, partly as a result of recent legislative changes.

The case of the "Borro" trademark identifying a Tuscan wine

A recent case before the Supreme Court concerned a dispute pertaining to a trade mark used for a notable Tuscan wine, il Borro. The owner took action against a local competitor, who brought a counterclaim seeking to void the geographical trade mark.

Both at first and second instance, the courts ruled that the trade mark had low distinctive character (the name qualifying as a trade mark nonetheless) – but there had been no infringement.

The case was then heard by the Supreme Court. It held, in its Judgment No. 4254 of 13 February 2019, that as a geographical trade mark makes reference to a particular geographical location it, typically, does not have distinctiveness, and simply indicates a product's geographical location. The Supreme Court considered that 'il Borro' is not a geographical name in the strict sense, but rather an expression that describes the characteristics of a natural feature (borro is the name of a local castle and is routinely used by hotels and tourist businesses in the area, as it is a prominent local feature). As such, the Supreme Court held that the use of 'il Borro' as a trade mark was valid, but the trade mark nevertheless has weak distinctive character..

The Supreme Court referred to a previous ruling that geographical marks were always generic, unless they carried modifications (Supreme Court, 19 April 2016, Judgment No. 7736). Only where these were present "may a geographical name… act, like any other word, figure or sign, to distinguish the product, having legitimate protection as a trademark".

Italian caselaw and the use of geographical names as invented names

While this 2019 judgment by the Supreme Court, and its precedent of 2016, did not refer to geographical names in the strict sense, they do appear to be consistent with the caselaw in the Court of Justice of the European Union, which tends to treat geographical names as generic by definition, or otherwise incapable of being monopolised.

Italian caselaw has, at least prior to these two judgments, emphasised the need to assess whether the use of a geographical mark is really that of an invented name (adozione di fantasia), in relation to the products and services that it in fact distinguishes. This approach goes back to a Supreme Court judgment of the 1990s. The principle is that where a geographical trade mark is considered to have been adopted as an invented name, then its adoption should be considered as lawful.

Other less recent decisions explored a mark's reputation as crucial to establishing its validity. Where a geographical name is assigned a modest reputation, and it may reasonably be said that it is completely unfamiliar to the public as a physical location, then the trade mark will tend to be valid, because consumers would not be able to link the characteristics of the product or service to the name. Being unfamiliar, the name is unsuitable for communicating a description of geographical location – see expressly the judgment by the Court of Florence, 18 September 2006, which ruled that the name of a modest farm ("Verrazzano") could be used as a trade mark for wines, given that the prohibition on registration of geographical names regards only particular geographical names that are already renowned or well-known for the category of products in question, and thus have a nexus with that category in the eyes of the consumer.

New legislation, known informally as the Growth Decree, which has been in force since 1 May 2019, prohibits registration of trade marks in Italy for "all names of States and Italian local government institutions".

This has resulted in a prohibition upon registration for at least some geographical marks, consistent with the trend not to register such names on the basis they are generic, or unsuitable for use as trade marks, as they evoke qualities unrelated to the product. This eliminates any need to examine whether a mark is being used as an invented name.

KEY TAKE-AWAY POINTS:

Previous Italian caselaw held that a geographical trade mark could be valid where it was used as an invented name (adozione di fantasia), regardless of its geographic meaning

A recent decision by the Italian Supreme Court found that a geographical mark will generally tend to lack distinctness, as it identifies a geographical location, and does not denote the origin of goods and/or services.

New legislation known informally as the Growth Decree (Decreto Crescita), in force since 1 May 2019, prohibits registration of trade marks in Italy for "all names of States and Italian local government institutions".